WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Barclays Bank PLC v. Barclay Research
Case No. D2011-2009
1. The Parties
The Complainant is Barclays Bank PLC of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Pinsent Masons LLP, United Kingdom.
The Respondent is Barclay Research of Greatham, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <barclayresearch.com> is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2011. On November 15, 2011, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On the same date, GoDaddy.com, LLC, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2011. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on December 22, 2011.
The Center was copied on communications between the Parties on November 24, 2011. In light of which, the Center inquired if the Complainant wished to suspend the proceedings for the Parties to reach a settlement. A request for suspension was received on January 6, 2012. Notification of suspension was issued the same date. On January 27, 2012, a request for re-institution was received as no acceptable settlement was reached.
The Center appointed David Perkins as the sole panelist in this matter on February 6, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
4.A The Complainant
4.A.1 The Complainant has traded as Barclays plc since 1985. Prior to that date the Complainant traded as Barclays Bank plc, Barclays Bank Ltd and in 1896 as Barclay & Company Ltd. The Complainant operates in over 50 countries and employs approximately 144,000 people. The business of the Complainant involves the moving, lending and protecting of money for more than 48 million customers and clients worldwide.
The Complainant’s BARCLAYS trademarks
4.A.2 The Complainant lists numerous United Kingdom registered trademarks for BARCLAYS and BARCLAY and BARCLAYS prefixed marks comprising BARCLAYCARD; BARCLAYS CAPITAL; BARCLAYS COMMERCIAL; BARCLAYS CORPORATE; BARCLAYS GLOBAL BANKING; BARCLAYS GLOBAL INVESTORS; BARCLAYS GLOBAL WEALTH; BARCLAYS WEALTH; BARCLAYS INTERNATIONAL and BARCLAYS MONEY SKILLS. The Complainant is also the proprietor of two United Kingdom registrations for BARCLAY [Class 36] - registration nos. 1,286,579 and 1,380,658 - respectively registered in 1986 and 1989.
4.A.3 The Complainant is also the proprietor of a number of Community Trademarks for BARCLAYS and a number of BARCLAY and BARCLAYS prefixed marks including BARCLAYCARD; BARCLAYS BUSINESS; BARCLAYS BUSINESS INTERNET BANKING; BARCLAYS CAPITAL; BARCLAYS CENTER; BARCLAYS COMMERCIAL; BARCLAYS CORPORATE; BARCLAYS GLOBAL INVESTORS; BARCLAYS MERCANTILE; BARCLAYS MONEY SKILLS; BARCLAYS WEALTH; THE BARCLAYS; and BARCLAYS CAPITAL DEAL VAULT.
The Complainant’s BARCLAYS Domain Names
4.A.4 The Complainant is the registrant of the domain names <barclays.com> created in November, 1993, and <barclays.co.uk> created prior to August 1996.
4.A.5 The Complainant also lists various industry awards gained in 2008 and 2009, as well as being awarded Business Superbrands status by the Business Superbrands Council in 2008.
4.B The Respondent
4.B.1 In the absence of a formal Response, what is known about the Respondent comes from the Complaint and its annexes.
4.B.2 The disputed domain name <barclayresearch> was created on April 24, 2011. The registrant is Barclay Research and the Administrative and Technical Contact is James Barclay.
4.B.3 The disputed domain name resolves to a holding page, which the Complainant states contains a number of finance related sponsored links to competitor products and services with those offered by the Complainant. On a screenshot such links include CH:VISA Kreditkarten <www.checkcheck.ch>; Forex Trading 24/7 “www.ch.saxobank.com”; and Kreditkarte Visa <www.bonus.ch>.
4.C Communications between the Parties
4.C.1 The Complainant’s lawyers sent a Cease and Desist letter to the Respondent dated July 1, 2011 asserting infringement of the Complainant’s United Kingdom and Community Trade Marks by the Respondent’s use of the disputed domain name. That letter and reminder letters dated August 5, 2011 and September 9, 2011 were unanswered by the Respondent.
4.C.2 However, it appears that one of the Complainant’s lawyers spoke by telephone to a representative of the Respondent on November 24, 2011 following an email from that lawyer to the Respondent dated November 15, 2011 attaching a copy of the Complaint in this administrative proceeding. The same day (November 24, 2011) James Barclay emailed the Complainant’s lawyer in the following terms:
“I have tried to remove the domain on the GoDaddy website but they have locked it due to the dispute. I have sent an email to them instructing them to remove it. The automated message said they would respond by tomorrow”
4.C.3 "On February 28, 2012 an email was received on behalf of the Respondent which read in material part:
“I am increasingly concerned at the wasted costs that are being incurred unnecessarily in this matter and the time wasted of those involved.
As soon as I was made aware of the issue that Barclays had with the domain name I agreed to transfer the name over to Barclays under cover of emails dated 15 November 2011, 9 January 2012 and again on 6 February 2012…….
Accordingly I want to set on record that I will not accept any liability for the costs incurred in this matter and re state again that I have no issue in giving up the domain name.
I trust this will be the end of the matter.
5. Parties’ Contentions
Identical or Confusingly Similar
5.A.1 The Complainant asserts that the disputed domain name is identical and therefore confusingly similar to the name BARCLAYS in which the Complainant claims common law rights and for which the Complainant has registered trademarks.
Rights or Legitimate Interests
5.A.2 The Complaint states that the Complainant has not authorised registration or use by the Respondent of the disputed domain name.
5.A.3 The Complainant also asserts that the Respondent cannot bring itself within any of the circumstances set out in paragraph 4 (c) of the Policy. For example, the Respondent is not known by that domain name; [paragraph 4(c)(ii)]. Nor, says the Complainant, was the Respondent’s use of the disputed domain name prior to notice of this dispute in connection with a bona fide offering of goods or services; [paragraph 4(c)(ii)]. To the contrary, the disputed domain name resolves to the holding page described in paragraph 4.B.3 above, with links to products and services of other parties competing with the Complainant in order to generate click-through income for the Respondent. Such is neither a non-commercial or fair use of the disputed domain name. Accordingly, the Respondent cannot bring itself within paragraph 4(c)(iii) of the Policy either.
Registered and Used in Bad Faith
5.A.4 The Complainant’s case is that by reason of the widespread use, reputation and notoriety of its famous BARCLAYS marks, the Respondent must have been aware that in registering the disputed domain name it was misappropriating the valuable intellectual propriety of the proprietor of the BARCLAYS trademarks.
5.A.5 In the light of the use to which the disputed domain name has been put - summarised in paragraph 4.B.3 above - the Complainant asserts that such use falls within paragraph 4(b)(iv) of the Policy.
5.A.6 The Complainant also asserts that the Respondent’s registration of the disputed domain name falls within paragraph 4(b)(ii) of the Policy.
5.A.7 Finally, the Complainant says that, given the notoriety of its BARCLAYS marks, the Respondent will never be capable of using the disputed domain name for a legitimate purpose.
As noted, no formal Response has been filed, other than the Respondent’s emails of November 24, 2011 and February 28, 2012 referred to in paragraphs 4.C.2 and 3 above.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent's rights or legitimate interests in the disputed domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 First, the Complainant clearly has rights in the registered trademarks listed in paragraphs 4.A.2 and 4.A.3 above.
6.6 The dominant feature of the disputed domain name is the prefix “Barclay”. That prefix is identical to the Complainant’s two United Kingdom trademark registrations for BARCLAY noted in paragraph 4.A.2 above and is similar to the very well known BARCLAYS trademarks. Further, like the disputed domain name, the Complainant’s BARCLAY and BARCLAYS trademarks are used in conjunction with a variety of suffixes. For example, BARCLAYS COMMERCIAL; BARCLAYS MERCANTILE; and BARCLAYCARD.
6.7 In the circumstances, the disputed domain name must be considered to be confusingly similar to the Complainant’s registered trademarks.
Rights or Legitimate Interests
6.8 In the light of the way in which the disputed domain name is used and for the reasons set out in paragraph 5.A.3 above, the Respondent cannot establish any of the circumstances set out in paragraph 4(c) of the Policy. Accordingly, the Complainant meets the requirements of paragraph 4(a)(ii) of the Policy.
Registered and Used in Bad Faith
6.9 Again, on the facts summarised in paragraph 4.B.3 above, the circumstances set out in paragraph 4(b)(iv) of the Policy are met.
6.10 Furthermore, both the lack of a formal Response [see, paragraph 5.B above] and the Respondent’s apparent willingness “to remove the domain name on the GoDaddy website” [see, paragraph 4.C.2 and 3 above] are also factors indicating the Respondent’s bad faith.
6.11 Accordingly, the Complaint meet the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <barclayresearch.com> be transferred to the Complainant.
Dated: February 22, 2012